Traffic-master, plc

Trademark Trial and Appeal Board

Mar 6, 2003

No. 76051058 (T.T.A.B. Mar. 6, 2003)

Mailed: March 6, 2003
Paper No. 10
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Trafficmaster plc
________
Serial No. 76/051,058
_______
Ralph D. Gelling of Perman & Green, LLP for Trafficmaster plc.
Carolyn Pendelton Cataldo, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______
Before Quinn, Hohein and Rogers, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Trafficmaster plc has filed an application to register
the mark "TRAFFICMASTER" for the following goods and services:1
"electrical and electronic apparatus and
instruments for provision of road traffic
information, for provision of information as
to road traffic congestion and speed and
about individual road vehicles, for road
traffic monitoring, and for monitoring of
road traffic congestion and speed and of
individual road vehicles; electrical and
electronic apparatus and instruments
locatable in vehicle interiors for providing
visual and oral information relating to road
traffic conditions; electronic equipment in
the nature of numeric, graphic and textual
data processors, wireless and fixed
electronic transmitters and receivers, and
central electronic graphical display systems
for monitoring and communicating with
1 Ser. No. 76/052,058, filed on May 18, 2000, which is based on a bona
fide intent to use such mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/051,058
2
individual road vehicles; control centers for
performing numeric, graphic and textual data
processing, wireless and fixed electronic
transmission and reception and central
electronic graphical display for monitoring
and communicating with individual road
vehicles" in International Class 9; and
"provision of road traffic information;
provision of information as to road traffic
congestion and speed and about individual
road vehicles; road traffic monitoring;
monitoring of road traffic congestion and
speed and of individual road vehicles, and
consultation with regard to the provision of
such information and the performing of such
monitoring and the related equipment used in
connection therewith" in International Class
39.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods and services, so
resembles the mark "TRAFFICMASTER," which is registered for
"portable non-tippable display apparatus for use in displaying
warning messages in emergency-type situations in the nature of
non-electric signs and metal sign stands,"2 as to be likely to
cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed,3 but an
oral hearing was not requested. We reverse the refusal to
register.
2 Reg. No. 1,313,111, issued on January 8, 1985, which sets forth a date
of first use anywhere of July 27, 1982 and a date of first use in
commerce of August 18, 1982; combined affidavit §§8 and 15.
3 Although the final refusal discusses the issue of likelihood of
confusion only as to the respective goods and makes no mention of
applicant's services, it is clear from applicant's briefs and the
Examining Attorney's brief that the refusal under Section 2(d) is
regarded by both applicant and the Examining Attorney as including
applicant's services as well as its goods and those of the registrant.
Ser. No. 76/051,058
3
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity of the goods
and services and the similarity of the marks.4 Here, inasmuch as
the respective marks are identical in all respects, including the
same highly suggestive overall commercial impression of providing
mastery or control over traffic situations or conditions,5 it is
plain that the contemporaneous use thereof in connection with the
same or closely related goods and/or services would be likely to
cause confusion as to their source or sponsorship. The principal
focus of our inquiry herein is accordingly on the similarities
and dissimilarities in the respective goods and services,
including similarities and dissimilarities in established, likely
to continue channels of trade and the conditions under which and
buyers to whom sales are made.
The Examining Attorney maintains that confusion is
likely because it "is clear that the applicant's [goods and
services] and the registrant's goods serve a similar function,
4 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [and services] and differences
in the marks."
5 Applicant, we observe, has not raised any argument to the contrary.
Ser. No. 76/051,058
4
and are likely purchased by the same consumers." In particular,
the Examining Attorney appears essentially to contend with
respect to applicant's goods that its "electrical and electronic
apparatus and instruments for provision of road traffic
information, for provision of information as to road traffic
congestion and speed and about individual road vehicles, for road
traffic monitoring, and for monitoring of road traffic congestion
and speed and of individual road vehicles" and its "central
electronic graphical display systems for monitoring and
communicating with individual road vehicles" are so broadly
identified as to encompass items in the nature of electric signs
and displays for providing emergency information. Such items,
she argues, are so closely related in a commercial sense to
registrant's goods, which she regards as including portable non-
electric signs for use in displaying warning messages in
emergency-type situations, that the contemporaneous use of the
mark "TRAFFICMASTER" by applicant and registrant in connection
with their respective goods would be likely to cause confusion as
to the source or sponsorship thereof.
Specifically, the Examining Attorney asserts in this
regard that (italics in original):
[N]othing in the registrant's
identification of goods indicates that the
signs are not for use for traffic emergency
situations. Therefore, it can be assumed
that the registrant's emergency signs, like
the applicant's electric signs and displays,
are also used to notify drivers of traffic
congestion, conditions and/or emergency
situations. According to the information
provided by the applicant, the goods [of
applicant] consist of infrared monitoring
units that are bolted to the sides of
Ser. No. 76/051,058
5
bridges, which emit information regarding
traffic congestion at their locations to a
control center which then transmits the
information to respective vehicles. .... It
is clear that the applicant's product is
utilized by both members of the general
public and by state officials, such as
police. It is also unlikely that the
applicant's products could be bolted to
public roadways, such as bridges, without the
permission and cooperation of county or state
officials. In fact, ... it [is] likely that
state or county officials would not only be
consulted prior to affixing the applicant's
products to public roadways, but would also
subscribe to the applicant's traffic
information service. Therefore, the relevant
consumers would be state or county officials
who are concerned with tracking traffic
congestion and traffic emergencies, and these
consumers would likely be confused as to the
source of the parties' goods.
The evidence of record demonstrates that
companies manufacture both manual and
electric signs under the same mark.
Therefore it is possible that companies, such
as the applicant, which sell traffic
condition monitoring systems would also sell
manual signs for traffic emergencies under
the same mark. Even if applicant's goods are
expensive, the fact that purchasers are
sophisticated or knowledgeable in a
particular field does not necessarily mean
that they are sophisticated or knowledgeable
in the field of trademarks or immune from
source confusion. See In re Decombe, 9
USPQ2d 1812 (TTAB 1988); In re Pellerin
Milnor Corp., 221 USPQ 558 (TTAB 1983).
There is no reason to believe that state or
county officials who are purchasing traffic
condition monitoring systems would not be
confused as to the source of road signs for
use in emergency traffic situations,
particularly given the fact that the parties'
marks are identical.
As to the applicant's services, ... it
is clear from the evidence of record that
companies provide consulting, manufacturing
and installation of signs and message centers
in connection with the sale of electronic and
non-electronic signs.
Ser. No. 76/051,058
6
With respect to the "evidence of record" referred to
above, the Examining Attorney relies upon copies of various use-
based third-party registrations which, we observe, show that in
only three instances is a mark respectively registered for, on
the one hand, "signs for traffic signals and luminous signs,"
"illuminated signs" or "luminous roadway signs" and, on the other
hand, "non-luminous, non-mechanical plastic signs not of metal,"
"metal signs" or "non-luminous road signs made of metal."6 We
also note, in view of registrant's "metal sign stands" and
applicant's various goods, that there appear to be just two
third-party registrations for marks which respectively cover such
goods as "sign holders" or "sign stands," on the one hand, and
"signs for traffic signals and luminous signs" or "illuminated
signs," on the other hand.7 Additionally, we observe that, of the
nine use-based third-party registrations made of record, there
are only two registrations, both of which are owned by the same
entity, in which a mark is registered for, on the one hand,
"electric and luminous portable and stationary traffic warning
signs" and, on the other hand, the "installation," "custom
manufacture" and "custom design for others" of "electric and
luminous signs, ... and portable and stationary traffic warning
signs."8 It is settled, we further note, that while use-based
6 Such registrations are: Reg. No. 2,303,318, issued on December 28,
1999; Reg. No. 1,458,000, issued on September 22, 1987; and Reg. No.
1,192,923, issued on April 6, 1982.
7 Those registrations are: Reg. No. 2,303,318, issued on December 28,
1999; and Reg. No. 1,458,000, issued on September 22, 1987.
8 The registrations are: Reg. No. 2,098,978, issued on September 23,
1997; and Reg. No. 2,098,945, issued on September 23, 1997.
Ser. No. 76/051,058
7
third-party registrations are not evidence that the different
marks shown therein are in use or that the public is familiar
with them, such registrations may nevertheless have some
probative value to the extent that they serve to suggest that the
goods and/or services listed therein are of the kinds which may
emanate from a single source. See, e.g., In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993) and In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 (TTAB 1988) at n. 6.
Applicant, while seeming to indicate in its main brief
that its "TRAFFICMASTER" mark is currently in actual use even
though a statement of use has not been filed in connection with
its application, argues that "the systems with which the subject
trademark is used and the signs for which the cited mark is
registered are so diverse as to preclude a likelihood of
confusion."9 Applicant also asserts that the channels of trade in
9 In addition, applicant contends that the Examining Attorney has
mischaracterized its goods by viewing the identification thereof "in a
vacuum" so as to encompass items in the nature of electric signs and
displays for providing emergency information. Such an approach,
applicant insists in its main brief, is improper inasmuch as it "has
defined its designation of goods in specific terms of components which
will be recognized in the trade as considerably afield from signs" and
"has submitted patent documents which clearly illustrate the nature of
its goods." Although applicant, as support for its position, cites In
re Trackmobile Inc., 15 USPQ2d 1152, 1154 (TTAB 1990), a case in which
this Board stated, among other things, that "when the description of
goods for a cited registration is somewhat unclear, as is the case
herein, it is improper to simply consider that description in a vacuum
and attach all possible interpretations to it when the applicant has
presented extrinsic evidence showing that the description of goods has
a specific meaning to members of the trade," such case is of little
help to applicant. Here, the problem is that it is the identification
of applicant's goods, instead of the identification set forth in the
cited registration, which is "somewhat indefinite" given the broad
rather than specific manner in which applicant has designated its
goods. Moreover, as pointed out in Trackmobile (italics in original):
Ser. No. 76/051,058
8
which registrant's goods "would be sold are so significantly
different from [those for] the goods and services of the instant
application ... that there is no likelihood of confusion."
In particular, with respect to the "extreme diversity"
in the nature of its goods and services as compared to
registrant's goods, applicant maintains in its initial brief
that:
Applicant's trademark is used with
systems which include computer networks,
communications networks and mobile terminals
for collecting, compiling, and transmitting
data throughout the networks. Such systems
cost over $1,000,000 and are extremely
complex. Examples of such systems are
described in the previously submitted ...
[copies of] U.S. Patent No. 5,317,311 and
International Patent Application Publication
No. WO98/36398 .... Applicant's goods and
services involve the monitoring of road
traffic and distribution of road traffic
information so obtained, particularly for
subscribers to the information service, such
as operators of fleets of vehicles and
similar businesses.
The goods of the cited registration are
nothing more than signs which may be set up
to indicate a specific condition. This could
be in a building, in a park, or in a home.
There is no indication of the area in which
such signs are used, except to indicate
emergencies. The examiner has assumed that
such signs are used for traffic control.
Further, the goods of the cited registration
are described in the designation of goods as
"non-trippable" ... [and] "non-electric".
It is clear that in determining the issue of
likelihood of confusion in ex parte cases, this Board must
compare applicant's goods as set forth in its application
with the goods as set forth in the cited registration. It
is improper to decide the issue of likelihood of confusion
based upon a comparison of applicant's actual goods with
registrant's actual goods.
Id. at 1153.
Ser. No. 76/051,058
9
These descriptive terms illustrate the simple
nature of these signs. They provide a visual
warning only. They may cost at most in the
hundreds of dollars as compared to the cost
of the goods of the subject application.
According to applicant, "[s]uch extreme differences in
goods [and services] preclude a likelihood of confusion as to
source." Applicant, with respect to the Examining Attorney's
contention that the same individuals would be responsible for
purchasing the goods and services at issue, also urges in its
main brief that, due to the complexity and expense of its
"computer and communication network[s]," "such networks are
generally customized to the particular application." Applicant
therefore asserts that "any purchaser thereof would be
knowledgeable and sophisticated and capable of understanding the
complex technologies involved," with the result that "[t]his
customer base would definitely perceive that such products [and
services] would be from a source which is different than a
producer of signs."
As to the patent documents made of record by applicant,
we observe that the abstract for the international patent
application refers to a "method of monitoring traffic flow,"
while the abstract for the U.S. Patent describes the following:
A traffic congestion monitoring system
[which] comprises infrared monitoring units
bolted to the sides of bridges over a
motorway network and emitting information as
to traffic congestion at their locations, a
control center which receives and transmits
the information, and paging units in
respective vehicles ... [for] receiving the
information and visually displaying the same
upon diagrams of the network or zones
thereof.
Ser. No. 76/051,058
10
Furthermore, with respect to the third-party registrations made
of record and relied upon by the Examining Attorney, applicant
not only "disputes that such citations even support the
Examiner's contention that electric and non-electric signs are
sold by the same company," but in any event insists that "[t]he
Examiner has not cited any support for the notion that one
company sells signs as well as computer and communications
network equipment for the purposes of controlling, monitoring,
and communication of status of traffic."
Upon careful consideration of the arguments and
evidence presented, we concur with applicant that, on this
record, it has not been shown that contemporaneous use of the
highly suggestive mark "TRAFFICMASTER" by applicant for its goods
and services is likely to cause confusion with the use thereof by
registrant for its goods. It is well settled, of course, that
the issue of likelihood of confusion must be determined on the
basis of the goods and services as set forth in the involved
application and the goods as described in the cited registration.
See, e.g., CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199
(Fed. Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 940 (Fed. Cir. 1983); and Paula Payne Products Co. v.
Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973). Thus, where the goods and services in the application at
issue and the goods in the cited registration are broadly
described as to their nature and type, it is presumed in each
instance that in scope the application and registrations
encompass not only all goods and/or services of the nature and
Ser. No. 76/051,058
11
type described therein, but that the identified goods move and/or
the recited services are rendered in all channels of trade which
would be normal therefor and that they would be purchased by all
potential buyers thereof. See, e.g., In re Elbaum, 211 USPQ 639,
640 (TTAB 1981).
Here, while applicant has not challenged the Examining
Attorney's treatment of registrant's goods as including portable,
non-tippable, non-electric warning signs, a strict reading of the
identification of registrant's goods would seem to indicate,
however, that registrant's goods do not encompass signs of any
kind. Instead, the identification of registrant's goods appears
to cover both "portable non-tippable display apparatus" which is
"for use in displaying warning messages in emergency-type
situations," with such messages being "in the nature of non-
electric signs," and "metal sign stands." Such portable non-
tippable display apparatus and metal sign stands are obviously
even more dissimilar, and hence even less possibly related, to
applicant's goods and the services it renders in association
therewith than would be electric signs and displays for providing
emergency information.
Nonetheless, to address the arguments presented, even
if registrant's goods are construed as including "portable non-
tippable display apparatus" which is "in the nature of non-
electric signs" which are "for use in displaying warning messages
in emergency-type situations," such goods have not been shown to
be closely related, in a commercial sense, to applicant's goods.
Specifically, when registrant's identification of its goods is so
Ser. No. 76/051,058
12
read and applicant's broad identification of its goods is
construed as encompassing items in the nature of electric signs
and displays for providing emergency information, the record
contains only three instances in which third parties have
registered a mark for such goods as well as for the kinds of
portable, non-tippable, non-electric signs for use in displaying
warning messages in emergency-type situations offered by
registrant. Similarly, with respect to applicant's goods, as
construed to include items in the nature of electric signs and
displays for providing emergency information, and registrant's
metal sign stands, the record demonstrates only two instances in
which third parties have registered a mark for both types of
products.
We find, in light thereof, that not only is the
evidence insufficient to establish that the relevant purchasing
public would regard such goods as closely related in a commercial
sense, in that they would expect goods of those types to emanate
from the same source and to be available through the same
channels of trade, but there is even less evidence to demonstrate
that the technologically complex and highly expensive electronic
apparatus and instruments offered by applicant for monitoring and
providing of road traffic information, including information as
to road traffic congestion and speed of individual road vehicles,
comes from or is affiliated with the same source which provides
(regardless of how registrant's identification of goods is
interpreted) the relatively inexpensive--and decidedly
commonplace--metal sign stands and portable, non-tippable display
Ser. No. 76/051,058
13
apparatus and non-electric signs for use in displaying warning
messages in emergency-type situations marketed by registrant.
Furthermore, there is absolutely no evidence which even suggests
that the relevant purchasing public has become accustomed to or
otherwise would readily assume that the kinds of detailed,
current, road traffic information, monitoring and consultation
services provided by applicant have their origin with or are
sponsored by the same entity which produces the types of
ordinary, metal sign stands and non-tippable, non-electric,
portable warning signs and display apparatus sold by registrant.
Moreover, while it appears to be the case that the
particular individuals responsible for purchasing applicant's
goods and subscribing to its associated services would typically
be employed by fleet vehicle operators (including, admittedly,
various departments of municipalities, such as school districts,
sanitation services, or state highway departments), there is
simply no showing that these purchasers would also be the same
group of buyers who would select and purchase registrant's goods.
As noted, for example, by our principal reviewing court in
Electronic Design & Sales Inc. v. Electronic Data Systems Corp.,
954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992), it is error
to deny registration simply because applicant markets and sells
its goods and/or services in one (or more) of the same fields
(e.g., emergency traffic information) as those utilized by
registrant for its goods without also determining who are the
relevant purchasers in instances of common institutional
customers. That is, the mere purchase of both applicant's goods
Ser. No. 76/051,058
14
and services and registrant's goods by the same institutions does
not, of itself, establish similarity of trade channels or overlap
of customers. Any likelihood of confusion must, instead, be
shown to exist not in a purchasing institution but in a shared
customer or purchaser. Thus, our principal reviewing court has
cautioned in this regard that:
We are not concerned with mere theoretical
possibilities of confusion, deception, or
mistake or with de minimis situations but
with the practicalities of the commercial
world, with which the trademark laws deal.
Id., quoting from Witco Chemical Co. v. Whitfield Chemical Co.,
418 F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff'g, 153
USPQ 412 (TTAB 1967).
Finally, even if there are situations in which the
customers for applicant's goods and services are the same
individual buyers as those who purchase registrant's goods, such
purchasers nonetheless would undoubtedly be knowledgeable and
sophisticated customers who would select applicant's goods and
services only after careful consideration and reflection,
especially given the high cost thereof. While, as the Examining
Attorney points out, the fact that purchasers are sophisticated
or knowledgeable in a particular field does not necessarily mean
that they are discriminating when it comes to trademarks and/or
service marks or immune from source confusion,10 the degree of
deliberation and technical sophistication which clearly would be
10 See, e.g., Wincharger Corp. v. Rinco, Inc., 297 F.2d 261, 132 USPQ
289, 292 (CCPA 1962); In re Decombe, supra at 1814-15; and In re
Pellerin Milnor Corp., supra at 560.
Ser. No. 76/051,058
15
required by customers for applicant's goods and services, as
opposed to registrant's far more everyday goods, would thereby
significantly decrease any likelihood of confusion.
Accordingly, and inasmuch as the mark "TRAFFICMASTER"
is highly suggestive of the respective goods and services and
thus merits but a narrow ambit of protection, we find on this
record that the contemporaneous use by applicant of such mark for
goods and services which are so significantly different in their
technological nature and cost from the goods in connection with
which registrant uses the same mark is not likely to cause
confusion.
Decision: The refusal under Section 2(d) is reversed.